NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is not citable as precedent. It is a public record. 

## United States Court of Appeals for the Federal Circuit

05-1329 REVOLUTION EYEWEAR, INC., Plaintiff/Counterclaim Defendant-

Appellant, and GARY MARTIN ZELMAN, Counterclaim Defendant,

v.
ASPEX EYEWEAR, INC. and NONU IFERGAN, Defendants/Counterclaimants- Appellees.

__________________________ DECIDED: March 30, 2006

__________________________

Before NEWMAN, SCHALL, and GAJARSA, Circuit Judges

. SCHALL, Circuit Judge

.DECISION Revolution Eyewear, Inc. (“Revolution”) sued Aspex Eyewear, Inc. (“Aspex”) in the United States District Court for the Central District of California for infringement of U.S. Patent No. 6,550,913 B2 (“the ’913 patent”). On March 8, 2005 , the district court granted summary judgment in favor of Aspex, after interpreting the relevant claim limitations and determining that claims 1-6 of the ’913 patent were invalid by reason of anticipation. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc. , No. 03-5965, slip op. (C.D. Cal. Mar. 8, 2005) (“ Summary Judgment Decis i on ”). Rev o lution now appeals the district court’s decision. For the reasons set forth below, we vacate th e grant of summary judgment and remand the case to the district court for further proceedings. DISCUSSI ON
I. The claims of the ’913 patent relate to aux iliary eyeglasses, also known as clipon glasses. Claim 1 is an i ndependent claim directed to a meth od of attaching auxiliary eyeglass e s to conventional eyeglasses, also known as primary eyeglasses. It reads as follows: A method of attaching auxiliary eyeglasses to conventional eyeglasses comprising; [1] for m ing sockets on temple ex t ensions on either side of said conventional eyeglass e s; [2] mounti ng magnets in said sockets on said conventional eyeglas s temple ext ensions; [3] forming appendages exte nding from either side of said auxiliary eyeglass e s constructed and arranged to fi t below said temple extensions of said conventional eyeglasses; [4] forming sockets on said appendages on said auxiliar y eyeglass e s; [5] mounti ng magnets in said so ckets on said auxiliary eyeglass appendages; [6] orienting said magnets in s a id sockets on said co nventional eyeglas s temple extensions and said magnets in s a id sock ets on said auxiliar y

05-1329 2eyeglass appendages with the maximu m magnetic attractive force approximately parallel to the plane of lenses in said conv entiona l eyeglass e s when s a id auxiliary eyeglasses are mounted on s a id conventional eyeglass e s; [7] positioning said appendag es on said auxiliary eyeglasses below s a id extens ions on said conventional eyeg las s es so said magnets in sa id appendages mate with said magnets on said conventional eyeglas s extens ions; [8] whereby said auxiliary ey egl asses are prevented from moving downward and being becom ing de tached when mounted on said conventional eyeglas ses by a maximu m attractive force between sa id magnets on said auxiliary eyeglasses and said convent ional eyeglasses. ’913 patent , claim 1. Claim 2 depends from claim 1, while c l aim 3 depends from claim 2. ’913 pat ent, claims 2 & 3. Claim 4 is an independent claim directed to the apparatus. It reads as follows: Apparatus for attaching auxiliary eyeglass e s to conventional eyeglasses comprising; [1] temple ex tensions attached to either side of a frame of said conventional eyeglass e s for attaching hinged temple pieces; [2] a socket attached to each of said temple extens ions; [3] a magnet mounted in each of said sockets; [4] an appendage attached to each side of said auxiliar y eyeglass e s; [5] a socket attached to each of said appendages; [6] a magnet mounted in each of said sockets; [7] said appendages constructed and a rranged to fit below s a id temple extens ions on said c onventional eyegl ass e s with said magnets in said sockets on said appendages mating with said magnets in s a id s o ckets on said extens ion of said conventional eyeglass frame; [8] said m agnets on said auxiliary eyeglas ses and said magnets on s a id conventional eyeglas s es being or iented with their maximum magnetic attractive force parallel to lenses in said conventional eyeglasses; [9] whereby said magnets on s a id au xiliary eyeglass e s when mated with said magnets on conventional eyegla sses provide maximum resistance to downward movement of said auxilia ry eyeglasses thereby preventing accidental detachment of sa id auxiliary eyeglasses from said conventional eyeglass e s

. ’913 patent , claim 4. Claim 5 depends from claim 4, while c l aim 6 depends from claim 5. ’913 patent, claims 5 & 6.

05-1329 3The Abstract of the ‘913 patent explains that, in the invention, the auxiliary eyeglass e s fit beneath conventional ey eglasse s “solely by the magnetic attractive force.” ’913 patent, abstract. It explains that, in a modification of the preferred embodiment, a clip on the auxiliary eyegla sses c a n be fitted over the bridge of conventional ey eglas ses or clips on the aux iliary eyeglasses can be fitted over a conventional frame. Id. The Background of the ‘913 patent explains that one object o f the invention in the ‘913 patent is to provide an improved method for attaching auxiliary lenses “without any need for addi tional support.” ’913 patent, co l. 2, ll. 22-25. It notes, though, that additional supporting clips may be used. ’913 paten t, col. 2, ll. 40-47. The Brief Desc ription of the Inv ention likewis e explains that the invention c a n hold the auxiliary eyeglasses on conv entional eyegla sses “wit hout the need for any additiona l support.” ’ 913 patent, col. 3, ll. 10-16. The preferred em bodiment of the ‘913 patent shows magnets mounted on the appendages of the auxiliary eyeglasses that fit beneath and attach to the magnets mounted on the temple extensions of conventional eyeglass e s

. ’913 patent, fig. 1. In the “optional but less preferred embodiment” in Figure 4, the ‘913 patent explai ns that a clip constructed to extend over and mount on a conventional eyeglass bridge “will provide additional support for auxiliary eyeglasses 10’ for use in extremely strenuous ac tivity.” ’913 pat ent, col. 6, ll. 55-65 & fig. 4. In Figure 7, another “optional but le ss preferred embodiment,” m agnets in the bridge of the auxiliary eyeglass lenses attach to magnet s in the bridge of c onventional eyeglasses, and the auxiliary eyegla sses hav e clips that fit over the eyeglass e s of the conventional eyeglass e s

. ’913 patent, col. 6, ll. 5-17 & fig. 7.

05-1329 4II. On November 2, 1998, inventor Gary Zelman filed Patent Applic ation No. 184,694 (“the ‘694 applicati on”), which eventually iss u ed as the ‘913 patent. During prosecution of the ‘913 paten t, Mr. Zelman elaborated on what the ‘913 patent claimed. He repeatedly distinguished hi s invention over the prior ar t, including U.S. Patent No

. 5,568,207 (the “Chao patent”). T he Chao patent is directed to magnetic clip-on eyewear where the sole arm of the au xiliary eyeglasses has a magnet and is constructed to sit on top of a conventional fr ame’s arm. Chao pat ent, abstract, figs. 1-6. The Chao patent explains that t he prior art eyeglasse s have “no supporting members for preventing the auxiliary lenses from mo ving downward,” but in the Chao patent the arms of the auxiliary eyeglasses act as both a top support member and a magnetic force member. Chao patent, col. 1, ll. 10 to col. 2, l. 10.
III. On August 21, 2003, Revolution sued Aspex in the Central District of California for infringement of the ’913 pat ent. On January 31, 2005, Aspex moved for partial summary judgment that claims 1-6 of the ‘ 913 patent were invalid as anticipated under 35 U.S.C. § 102(a) as “known or used by ot hers” and § 102(b) as “on sale” based on prior art Takumi 970 Series frames (the “Takum i frames”). In the Takumi frames, which allegedly were displayed and sold in 1997 by M anhattan Design Studio, Inc. (“MDS”), (1) the conventional eyeglasse s had a magnet pointing down an d (2) the lower arms of the auxiliary eyeglass e s included a magnet pointing up, while the upper arms did not include a magnet.

05-1329 5On March 8, 2005, the district c ourt granted Aspex’s summary judgment motion for invalidity wit hout a hearing. Summary Judgment Decis i on , slip op. at 1. Before considering the issue of anticipat ion, the court first interpreted the claim language. Id. , slip op. at 13. Rev o lution urged that the claims of the ‘913 pat ent were limited t o eyewear in which the arms of the auxiliary frame attach to the pri m ary frame only fr om below with no other means of attachment. The court rejected Revolution’s claim construction. The court held that the lan guage of c l aims 1-6 was not ambiguous, as “ i t does not require that the auxiliary eyeglass [] frames be held in pl ace solely by bottom

mounted magnets and by ‘ no other means of mechanical attachment.’” Id. , slip op. at 14. The c ourt then pointed to the specificat ion, which states that th e invention is not to be limited by the drawings or written description—demonstrating that there is nothing in the specification to limit the claims. Id. , slip op. at 16. The court also referred to the less preferred embodiments, wh ich use clips to bolster s upport, and stated that “[i]f the claims prec luded additional means of suppor t, these embodi ments would be o u tside the limitations in the claims.” Id. The court held that the prosec ution history did not limit the invention in the ‘913 patent to auxiliary eyeglasses that are a ttached solely b y bottom-mounted magnets. Id. , slip op. at 16. “All t he evidenc e in the pr osecution r e cord relied on by [ R evolution] distinguishes [Revolution’s] invention fr om one in which the ma gnets are mounted on top of the arms of the primary frames . None of the evidenc e distinguishes [Revolution’s] invention fr om another bottom-mounted conf iguration that contains additional supportive elements.” Id. The c ourt pointed out t hat the claims that would have supported Revolution’s pos ition—ones w here the auxiliary ey eglasses were he ld

05-1329 6in position and prevented from being dis p laced downwardly “solely by the attractive magnetic forces of the downwar dly and upwa rdly oriented magnet s”—were cancelled during pros ecution. Id

. After construing the claims, the court focu sed on the issue of anticipation. T h e court considered (1) the declaration of As pex’ s expert , David Yinkai Chao, the Director of International Sales at C ontour Optik Inc., an eyeglas s es design, manufacturing, and sales company, who said the ‘913 patent wa s anticipated; and (2) the declaration o f Revolution’s expert, Julie Madis on, a former MDS sales agent. Id. , slip op. at 17. Ms. Madison stated that the upper appendages on the auxiliary eyeglasses on the prior art Takumi frames were functional and essentia l, thereby rendering the Takumi frames different from the au xiliary eyeglasses clai med in the ‘913 patent and making them nonanticipating. Id. The court concluded that “a triabl e issue of fact [was] not raised” because M s . Madison’s declaration did not cont radict Mr. Chao’s declaration: “It does not negate the conc lusion that all the elem ents of claims one through s i x of the ‘913 patent are present in the Taku mi 970 eyewear; it only says, in effect, that the Takumi 970 eyewear possess es elements additional to those contained in claims one through six.” Id. Revolution timely appealed the district co urt’s decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
IV. This court reviews a district court’s grant of summary judgment de novo

. TorPharm Inc. v. Ranbaxy Pharms., Inc. , 336 F.3d 1322, 1326 (Fed. Cir. 2003). “When ruling on a motion for summary judgment, a ll of the nonmovant’s evidence is to b e

05-1329 7credited, and all justifiable infer ences ar e to be drawn in the nonmov ant’s favor.” Caterpillar Inc. v. Deere & Co. , 224 F.3d 1374, 1379 (Fed. Cir. 2000). “Where the evidenc e is conflicting or credibilit y determinat ions are r equired, th e judgment should be vacated rather than reversed, and th e case should be r e manded for further proceedings.” Jones v

. Hardy , 727 F.2d 1524, 1531 (Fed. Cir. 1984). A patent claim is invalid as anticipated if every limitation in a claim is found in a single prior art reference, eit her explic itly or inherently. See MEHL/Biophile Int’l Corp. v. Milgraum , 192 F.3d 1362, 1365 (Fed. Cir. 1999). The first step of an anticipation analys is is claim const r uction; the second st ep in the analysis inv o lves a c o mparison of the construed claim to the prior art. Helifix, Ltd. v. Blok-Lok, Ltd. , 208 F.3d 1339, 1346 (Fed. Cir. 2000).
V. On appeal, Revolution argues that the dist rict court erred in ruling that the Takumi frames anticipate claims 1-6 of t he ‘913 patent because the c o urt failed t o correctly construe the claims in view of t he prosecution history. It asserts “[t]he prosecution history leads to an inescapable conclusion that t he claims of the ‘913 patent are limited to eyewear in wh ich the magnets of the auxiliary appendages fit below the magnets of the conventional eyeglasses an d the attraction between the magnets is the only sourc e of support holding the two frames together .” (Emphasis in original). Based on the prosecution hist ory, Revolution ass e rts that the claims “must be limited t o eyewear where the auxili ary frame’s magnets engage only fr om the bottom of the conventional frame and where t he two frames are held together by no ad ditional top attachment ”. (Emphasis in original). It argues t hat the district court erred in ruling that

05-1329 8the language relating to a preferred em bodiment immediately preceding the claim language precludes Revolution’s proposed cons truction becaus e the disc laimer in the prosecution history is clear. According to Revolution, the less preferred clip-on embodiments depicted in Figures 5-9 of the specification were disavowed during the prosecution history. Revolu tion concludes that the Takumi frames do not anticipate the ‘913 patent because the “auxiliary frame in Tak u mi contains top support arms in addition to magnets,” while t he ‘913 patent is limited to bottom-only attraction eyeglass e s

. Aspex responds that the dist rict court properly construed the c l aims and, even if it did not, the claims are still invalid. Fi rst, Aspex argues the district court properly construed the claims to not include an additi onal limitation requiring that magnets provide the “sole means of support” for the auxiliary eyeglasses. According to Aspex, this is because (1) the plain language of the cl aims cont rols; (2) it i s improper to re-write claims; (3) the district court properly c onsidered the prosecutio n history; and (4) if Revolution is correct, the patent may be invalid under 35 U.S.C. § 112.
VI. We agree with Rev o lution that the district court erred in construing the claims of the ‘913 patent. While the court was corr ect that the ordinary meaning of the claim language and the specification do not limit the scope of the invent ion to devices without any help f r om other supporting members, during prosecution Mr. Zelman clearly disclaimed the use of ot her supporting members. “[T]he prosecution history (or file wrapper) li mits the interpretation of claims s o as to exclude any interpretation that ma y have been disclaimed or disavowed during

05-1329 9prosecution in order to obtain claim allowance.” Standard Oil Co. v. A m . Cyanamid Co. , 774 F.2d 448, 452 (Fed. Cir. 1985). For prosecut ion disclaimer to arise, “the alleged disavowing actions or statements made dur ing prosecution [must] be both clear and unmistakable.” Omega Eng’g, I n c. v. Raytek Corp. , 334 F.3d 1314, 132 6 (Fed. Cir. 2003). In this case, Mr. Zelman repeatedly distin g u ished the invention in the ‘913 patent from the prior art on two ground s. First, he distinguished the prior art because in his invention the magnet s were bot tom-mounted. He st ated that “[f]or the first time an auxiliary eyeglass frame having bottom mounted magnets with the minimum requirements was successfully invented.” (E mphasis added). He also stated that the Chao patent “describes mounting the auxiliary frame over the te mples.” (E mphasis in origina l ). Second, Mr. Zelman distinguis hed the prior art on the gr ound that in his invent ion no additional support was requir ed. With re spect to the additional support argument, during pros ecution Mr. Zelman stated:

• The “possibility of mounting auxiliary frames on conventional eyeglasses with the sole support being provided by mutually attractive magnets . . . i s not taught by any of the prior art references.”

• “Applic ant in his research into the us e of magnets to support auxiliary eyeglasses discovered that with properly positioned and oriented magnets . . . they would sufficiently support eyeglasses without any help from other supporting members .”

• “The references relied on by the Ex aminer . . . emphasize repeatedly that magnets alone are ins u fficient to support auxiliary lens es.”

• “They [references cited by the Exam iner] repeatedly refer to and desc ribe supporting members i n addition to the magnets .”

• “The references relied on [by t he Examiner] all teach that there must be additional s upport .”

• “[T]hese [prior art] references also t each that magnets have attractive force but they also teach that t hat magnets alone ar e not enough to s e curely support auxiliary eyeglasses and some additional support is needed .”

05-1329 10• “[The prior art references] all teac h the same thing; that is, that additional sup p ort is needed .”

• “The references teach magnets attract but also teach that that force i s not enough and additional support is needed .”

• “Isn’t the fact that the [pri or art] references teach the necessit y for additional support show there would be no motivati on to produce applicant’s claimed invention?”

• “Chao and several other references clearly teach that there must be some mechanical support in addition to the magnets.”

• “[T]he references teach or suggest a contrary construction of mechanica l support in addition to the magnets .”

• “[T]he entire thrust of the Chao patent is to provide additional support in addition to the magnets .”

• “The only s upport for auxiliary ey eglasses 10 is a mutual attraction of magnets 26 and 30, the magnets are oriented in a direct ion that provides maximum magnetic attraction in opposition to any dislodging force.”

• “The difference between the prior art refer ences and the claims at issue is that the auxiliar y glasses are a ttached underneath the primary glasses. As suc h the auxiliary glasses are not s upported on the primary glasses .”

• “Although the Examiner has concluded that the magnetic attractive force is the same abov e or below the temples, this wo uld not explain or teac h why it would have been obvious t o one of ordinary skill in the art to mount the extens ion beneath the temples without an y support other than the magnets, particularly when the [Chao] reference repeatedly refers to need for additional suppor t in addition to the magnets.”

• “Chao repeatedly indicates that additional support of the auxiliary lens is necessary . Chao desc r ibes the disadvantage of using magnets alone .”

• “The scope and thrust of the Chao patent is that magnets alone are insufficient to support the auxiliary lenses and additional support is required. Applic ant by contrast teaches that no such support is required .” (Emphasis added). Mr. Zelman thus stated no less than seventeen times that in his invention, unlik e the prior art, no additional support was needed. Even if the Examiner was only persuaded t o allow the ‘913 patent bas ed on the fact that the prior art had bottom-mo unted magnets and was not concerned about the fact that the prior art required additional s upport, Mr. Zelman repeatedly asserted the prior art required additional support. With thes e statements, Mr. Zelman clearly disclaim e d coverage over a dev ice with additional support. It is irrelevant what the Examiner t hought Mr. Zelman was disc laiming. It was Mr. Ze lman’s own statements that created t h e

05-1329 11disclaimer. See Springs Window Fashions LP v. Novo Indus., L.P. , 323 F.3d 989, 994- 95 (Fed. Cir. 2003); Laitram Corp. v. Morehouse Indus

. 143 F.3d 1456, 1462 (Fed. Cir. 1998). The distric t court focused on t he fact that, during prosecution, Mr. Zelman attempted to add two claims that would hav e more clearly claimed auxiliary eyeglass e s with bottom-mounted magnets held up “ s o lely by the attractive magnetic forces” or

“ solely by said attractive force.” Those clai ms were never entered, as the Examiner found they would requir e additional searching and would not simplify issues f o r appeal. The Examiner did not suggest, however, that the proposed c l aims raised new matter. While the district court is co rrect that the claims wer e la ter cancelled by Mr. Zelman during pros ecution, the claims were not cancelled because Mr. Zelman was abandoning the subject matter, but becaus e the Examiner would not a llow them to be entered. In sum, Mr. Zelman’s stat ements clearly and unmistakably disclaimed coverage of a device with additional su pport. Although under this in terpretation some of the preferred embodiments will be re ad out of the ‘913 patent, this court has recognized that when there is a c l ear disclaime r during the prosecut ion history, it ma y be appropriate t o read out the prefer red embodiments. See N. Am. Container, Inc. v

. Plastipak Packaging, Inc. , 415 F.3d 1335, 1345 (Fed. Cir. 2005); Rheox , Inc. v. Entact, Inc. , 27 6 F.3d 1319, 1320-27 (Fed. Cir. 2002); Elekta Instrument S.A. v. O.U.R. Sci. Int’l, Inc. , 214 F.3d 1302, 1308 (Fed. Cir. 2000). This is such a case.

05-1329 12VII. In sum, (1) We hold that, in granti ng summary j udgment in favor of Aspex, the district court erred as a matter of law by misconstrui ng the claims to cover additional support. Under the correct interpretation, the ‘913 patent covers auxiliary eyeglasses t o be held in place solely by bottom-mounted magnets and without any help from other supporting members

. (2) Under this interpretation, we hold t hat genuine issues of material fact exist as to whether the claims are invalid as anticipated by the Takumi frames. 1 (3) We consequently vacate the dec ision of the district court and remand the case for further proceedings on the issue of anticipation, and, if necessary, proceedings on the issues of infringem ent, validity, and damages. Each party shall bear its own costs.

1 We thus reject Aspex’s argument that it is entitled to summary judgment even under the claim construction urged by Revolution.

05-1329 13